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Tuesday, November 29, 2011

Wondering - can UC really force me to sign new patent agreement?

Just got this email

Dear UC Colleague,
When you first joined the University of California, you signed a Patent Acknowledgment or Agreement (depending on when you joined UC) as a condition of employment or your ability to use UC research resources and facilities. Because of recent court decisions in the case Stanford v. Roche, it is necessary for you to sign an amendment to that document.

This amendment clarifies the original intent of the Patent Acknowledgment or Agreement you signed: to assign to the University rights to inventions and patents you may conceive or develop while employed by UC, using UC research facilities and/or resources, or using gift, grant or contract funds received through the University.This is not a change in the Patent Policy; it is simply an amendment that clarifies the existing Acknowledgment or Agreement in light of the court decisions.

Your electronic signature on the Patent Acknowledgment/Agreement Amendment available here will ensure that the University is able to fulfill its intellectual property obligations to research sponsors, industrial partners, the federal government and others.

Signing the Amendment is easy. Simply write down your PIN number shown below; then click on the signature link to sign your Patent Acknowledgment/Agreement Amendment. You will also need your Employee ID number, which you can find by signing in to your personal account on At Your Service Online (https://atyourserviceonline.ucop.edu/).

VR Election Services, an independent firm, is conducting this election on behalf of the University of California. More details are available on At Your Service (http://atyourservice.ucop.edu/employees/policies_employee_labor_relations/patent-acknowledgment).

Please note: Your PIN is personalized for you and should not be shared with or forwarded to another.

It is a follow up to a previous email telling us that this email was coming. If one goes to the Web Site UC has made regarding this patent agreement it is pretty clear they think all employees have to sign this as a condition of employment. Seems a bit weird to say "You have to sign this or you will lose your job" - I do not remember when I was offered the job being told that I may be forced to sign various agreement made after I signed up. Anyone out there know - can UC really say I must sign this to keep my job?

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Here is the prior email about this issue

November 18, 2011

RE: Amendment to Patent Acknowledgment or Agreement

Dear Colleague,

I am writing to follow up on the recent letter from Provost and Executive Vice President Lawrence Pitts and Executive Vice President Nathan Brostrom about the requirement that all faculty, staff, and others who use University resources or facilities sign an amendment to the patent document you signed when you came to the University of California. This letter provides important information about the Patent Amendment process that commences the week of November 28, 2011.

Background

The Patent Acknowledgment or Agreement you previously signed requires you to promptly report and fully disclose potentially patentable inventions. You also acknowledged an obligation to assign to the University rights to inventions and patents conceived or developed while employed by the University or while using University research facilities or UC gift, grant, or contract research funds.

As a result of recent court decisions, UC’s ability to meet its various obligations associated with rights to inventions and patents are at risk. It is important that you sign an Amendment to the Patent Acknowledgment or Agreement you previously signed. Patent amendments are not unique to UC. Other universities are taking similar action to protect their intellectual property rights.

Some particular points to highlight are:· The University Patent Policy itself is not changing.

· The scope of inventions that are assignable to the University has not changed.

· The Amendment does not reach backward to pre-existing inventions.

· The Amendment helps to protect the University and its employees should future consulting or visitor arrangements inadvertently give rights away.

Signature ProcessUC has engaged VR Election Services Corporation (VRES) to administer an electronic process for signing the Patent Amendment. You may recall that VRES successfully conducted the recent election of staff representatives to the UC Retirement System Advisory Board. Beginning the week of November 28, VRES will send an email to your UC email address of record with a copy of the Patent Amendment and directions for submitting your electronic signature. The email you receive from VRES will appear as follows:UC Patent Amendment@vres.usPlease check spam and junk folders so you do not miss this email and do please sign the Amendment promptly when you receive it.

If you do not have a UC email address, VRES will mail a paper copy of the Amendment to your address of record. The mailing will include instructions for submitting your electronic signature or returning the signed amendment by mail.

More information about the Patent Amendment and the signing process, including answers to frequently asked questions (FAQs), is available on the At Your Service website (http://atyourservice.ucop.edu/employees/policies_employee_labor_relations/patent-acknowledgment/index.html ). If you have questions not answered in the FAQs, please contact Wendi Delmendo, our Chief Compliance Officer at wjdelmendo@ucdavis.edu.

This project is very important to the University’s ability to meet its intellectual property obligations, accept sponsored research funding, and establish relationships with outside partners.

Thank you for your ongoing contributions to the University and for your cooperation.

I'd be very interested to know how enforceable this is. I suspect it depends on what you signed when you first took the job. If you never signed the original, can you be forced to sign the amended version?

IANAL (and I'm going to speculate a bit) but I don't think they can *make* you sign it. They can however argue that it makes you ineligible for new grants, transfer agreements, etc if you don't sign it, seeing as patent obligations might not be fulfilled (in light of that recent court case).

Now if you think about it, this is all about reducing the university's liability and avoiding tough questions. If you receive a grant with patent obligations, and you later assign a related patent to an outside entity violating those obligations, then surely the grant authority could sue you personally for breach of contract. You still remain bound by the terms of your grant after all, even if the university is not necessarily the recipient of your patents.

It looks like the amendment is harmless enough though. The patent declaration basically says "all your inventions belong to us". Standard as it goes.

Anyway, without being an actual patent lawyer, it's hard to even understand the court's decision. Best bet if you really want to know is look up the judge's rationale and read it.

California is a work for hire state and no one can limit your employment by contract after you have left their employment. I believe that there is specific period of time that a limitation of work can be held.